Judge Baylson issued a recent claim construction order construing the following terms:
"discrete region(s)"
"fixed upon a solid support according to an array comprising discrete regions"
"determining the possible presence and quantification of precipitate(s) in said discrete region(s)"
"correlating the presence and quantification of the precipitate(s) at the discrete region(s) with the identification and/or quantification of said target compound"
"colloidal gold particles coupled to the bound target compound"
"wherein the possible presence and quantification of a precipitate is obtained by reflection, absorption or diffusion of a light beam upon said precipitate"
"wherein binding of said targe compound to one or more of said multiple species of capture molecules leads to a catalytic reduction of a metal present in solution, and a formation of a metallic precipitate in one or more of said discrete region(s)
"wherein said computer is programmed to detect and/or quantitate said target compounds"
Update: Below is the order adopting the constructions. Here is Judge Baylson's July 12, 2010 memorandum opinion in support of the claim constructions.
Judge Robreno recently issued a claim construction opinion in a case involving 2 patents and nearly 30 disputed claim terms. The patents involve technology related to elevator installation. The disputed claim terms included the following:
“modernized”/“modernizing”
“modernizing device”
“a device for temporarily operating an elevator installation during modernization”
“a system for modernizing an elevator installation"
"a method for modernizing an elevator installation"
"elevator installation"
"elevator control"
"call report"
"floor terminal"
"at least one of [A] and [B]"
“floor terminal . . . operative for at least one input of destination call reports and recognition of identification codes of passengers"
“floor terminal . . . for at least one of the input of destination call reports and for recognition of identification codes of users”
“computing unit . . . for at least one of evaluating the destination call reports and association of destination floors with recognized ones of the identification codes”
"identification code[s]"
"recognition of identification codes of passengers"
"computing unit"
"destination signal"
“interrupting at least one existing electrical floor call transmitter line between at least one floor call transmitter and the elevator control”
“interrupting at least one existing car call transmitter line between at least one car call transmitter and the elevator control”
“the elevator control being disconnected from the hall call transmitters and the car call transmitters of the elevator installation”
"existing electrical floor call transmitter line"
"existing car call transmitter line"
"floor call transmitter line input"
"car call transmitter line input"
"hall call transmitters"
"in a modular manner"
"in succession"
"performing said steps a. through c. [of claim 1] for each elevator car and associated elevator control of an elevator installation in succession whereby the elevator installation is modernized in a modular manner”
"temporarily"
In a case involving a patent covering high performance diodes (electronic components), Chief Judge Sleet construed the following terms:
- "semiconductor substrate of a first conductivity type"
- "pedestal"
- "on [the first substrate of] the substrate"
- "side regions"
- "channel region in the substrate below the first oxide layer under the side regions"
- "a buried layer of a second conductivity type under and between the side regions"
- "the substrate between the side regions"
Integrated Discrete Devices, LLC v. Diodes Incorporated, C.A. No. 08-888-GMS, Order Construing the Terms of U.S. Patent No. 5,825,079 (D. Del. May 26, 2010).
Of note was the Court's comment that it "adopted the defendant's proposed construction of [the term "semiconductor substrate of a first conductivity type"]...as a sanction for the plaintiff's failure to follow its Markman procedures." Id. at 1, n.1.
Magistrate Judge Stark construed the claim terms below in an ANDA patent infringement case related to the brand name Oracea® doxycycline capsules. The Resesarch Foundation of State University of New York v. Mylan Pharmaceuticals, L.P., C.A. No. 09-184-JJF-LPS, Report and Recommendation Regarding Claim Construction (D. Del. May 12, 2010). A main feature of the invention is that the patented drug compounds "achieve a therapeutic result through non-antimicrobial mechanisms." Id. at 2.
(1) "tetracycline compound"
Construction: compound within the class of which tetracycline is the parent compound
and is characterizied by a unique four-ring structure
(2) "antibiotic tetracycline compound"
Construction: a compound having antibiotic activity within the class of which tetracycline
is the parent compound and is characterized by a unique four-ring structure
(3) "the tetracycline compound has substantially no antibiotic activity"
Construction: the tetracycline compound has been modified chemically to reduce or
eliminate its antibacterial activity, or the tetracycline compound possesses
antibacterial activity but is employed in an amount which has substantially
no antibacterial effect
(4) "minimum antibiotic serum concentration"
Construction: the lowest concentration known to exert a signficant antibiotic effect
(5) "chronic inflammatory condition"
Construction: an inflammatory condition lasting for days to weeks or longer, and is
associated histologically with the presence of lymphocytes and
macrophages and with proliferation of blood vessels and connective tissues
Softspikes LLC v. MacNeill Engineering Co, Inc., C.A. No. 08-469-GMS (D. Del. Apr. 29, 2010)
U.S. Patent No. 6,052,923
1. Term: “bearing portion substantially bears the weight of said user, substantially without said traction protrusions bearing said weight of said user”
Construction: “bearing portion bears the overwhelming majority of the weight of said user:
2. Term: “to support the majority of the body weight placed on the cleat, tending to keep weight off said traction protrusions”
Construction: “a majority of the weight applied to the cleat is borne by the weight bearing surface”
3. Term: “deflecting”
Construction: “bending to some extent”
4. Term: “withstanding abrasion”
Construction: plain and ordinary meaning
5. Means-plus function term: “sole attachment means”
Construction: The function of the term is “attachment of removable cleats to the shoe” The corresponding structure includes a socket, displayed in Figure 2 and item 21
6. Means-plus function term: “flange attachment means”
Construction: The function of the term is “removably attaching the cleats to a sole attachment means of a sole of a shoe” The corresponding structure includes an attachment stud that screws into a receptacle on a golf shoe (see Figures 2, and 4-11 and item 20)
7. Terms: “a bearing portion on said opposing lower surface of the flange remote from said edge,” “central abrasion portion,” and “abrasion portion”
Construction: “the part of the lower surface of the flange bounded by the plurality of the traction protrusions”
U.S Patent No. 6,167,641
1. Term: “to provide traction without puncturing turf”
Construction: “the protrusions extend into and engage the grass blades of the turf, but do not penetrate into the ground or, if the do penetrate into the ground on certain types of turf surfaces (such as closely cropped greens), penetrate into the ground only a negligible amount insufficient to significantly damage the grass plant.”
2. Term: “deflectable” and “deflectably”
Construction: plain and ordinary meaning
3. Term: “traction element extending when in said relaxed configuration substantially
laterally substantially from said perimeter of said hub”
Construction: “when not under load, the entire traction element extends outwardly from the perimeter of the hub further than it extends downwardly from the perimeter of the hub.”
4. Term: “perimeter”
Construction: “the outermost edge of the hub”
5. Term: “said arm extends away from said second side of said hub, such that when said
removable cleat is attached to a shoe sole, said arm is cantilevered away from said shoe sole”
Construction: “the arm is attached to the hub and extends away from the hub so that it is not in contact with the shoe sole when in a relaxed configuration.”
6. Means-plus function term: “sole attachment means”
Construction: The function of the term is “attachment of removable cleats to the shoe” The corresponding structure includes a socket, displayed in Figure 2 and item 21
7. Means-plus function term: “hub attachment means”
Construction: The function of the term is “attaching the hub to one of the sole attachment means.” The corresponding structure includes a stud or shaft integral with the hub (see Figures 2, 4-6, or 25-28 and item 20, or a separate conventional screw removable from the
central hub)
8. Term: “turf-engaging portion projecting when in said relaxed configuration away from,
and substantially perpendicular to, said second side”
Construction: “when not under load, the turf-engaging portion of the traction element extends downwardly from the second”
9. Term: “arm extending substantially laterally from said perimeter of said hub”
Construction: “when not under load, the arm element extends outwardly from the perimeter of the hub further than it extends downwardly from the perimeter of the hub”
10. Term: “to minimize wear”
Construction: plain and ordinary meaning
U.S. Patent No. 6,397,499
1. Means-plus function term: “gripping member for engaging the ground”
Construction: The function of the term is “engaging the ground.” The
corresponding structure includes those described in Figures 1, 3, 9, 11, 21, and 22
2. Term: “base”
Construction: plain and ordinary meaning.
3. Term: “three extensions attached to the base”
Construction: plain and ordinary meaning.
4. Term: “projects radially outward from the base”
Construction: plain and ordinary meaning.
5. Term: “skirt”
Construction: “the portion of the cleat generally located between the portion that engages the ground, and the opposite end.”
U.S. Patent No. 6,332,281
1. Means-plus function term: “ground engaging member”
Construction: The function of the term is “engaging the ground.” The corresponding structure includes those described in Figures 1,3,9,11,21 and 22
2. Term: “opening”
Construction: plain and ordinary meaning.
3. Term: “radial receptacle projections”
Construction: “receptacle projections that extend in a radial direction, i.e. radiating from or converging to a common center.”
4. Term: “radial cleat projections”
Construction: “cleat projections that extend in a radial direction, i.e. radiating from or converging to a common center.”
5. Term: “the radial center of the projection”
Construction: “the midpoint of the radial projection”
6. Terms: “convex curved” and “convex”
Construction: “curved or rounded like the exterior of a sphere or circle”
7. Term: “skirt”
Construction: “the portion of the cleat generally located between the portion that engages the ground, and the opposite end”
8. Term: “the cleat projections are capable of interacting with a corresponding cleat
Receptacle”
Construction: plain and ordinary meaning
9. Term: “cleat ... having a vertical axis with first and second ends”
Construction: “a vertical line through the center of the cleat running from the top-most portion of the cleat to the bottom-most portion of the cleat.”
10. Term: “equally spaced”
Construction: “evenly distributed around the cleat or receptacle”
U.S. Patent No. RE40,460
1. Means-plus function term: “surface engaging member”
Construction: The function of the term is “engaging the ground.” The corresponding structure includes those described in Figures 1,3,9,11,21, 22 and 28
2. Term: “opening”
Construction: plain and ordinary meaning
3. Term: “radial receptacle projections”
Construction: “receptacle projections that extend in a radial direction, i.e. radiating from or converging to a common center”
4. Terms: “convex curved” and “convex”
Construction: “curved or rounded like the exterior of a sphere or circle”
5. Term: “circumferential center”
Construction: “the midpoint of the projection”
6. Term: “the cleat projections are capable of interacting with a corresponding cleat receptacle”
Construction: plain and ordinary meaning.
7. Term: “a cleat [member] having a vertical axis with first and second ends”
Construction: “a vertical line through the center of the cleat running from the top-most portion of the cleat to the bottom-most portion of the cleat.”
8. Term: “equally spaced”
Construction: “evenly distributed around the cleat or receptacle”
In a case involving technology relating to wiper blades, Judge Robinson recently issued a claim construction order construing the terms set forth below:
- "component"
- "mounted to said concave surface of said support element"
- "mounted directly to the convex surface of said support element"
- "a leading edge face"
- "wherein each crosspiece disposed at the end sections of the two spring stripes is provided with a covering cap"
- "groove-like construction"
- "a wiper blade part"
- "wind deflection strip is disposed between and in contact with each respective end cap and the device piece"
- "base body"
- "bracing itself on the wiper blade"
- "detent shoulder"
- "pointing toward the other end portion"
- "cavities"
- "protrusions protuding;" "a protusion protruding"
- "long sides;" "long sides of the support element"
- "hook legs"
- "detent tooth that protrudes from the long side of the support element"
- "recess"
- "the face of the end of the support element"
- "inside wall"
- "pin passage"
- "tail space"
- "forwardmost free end"
- "rearward of said pin passage and said rivet passage"
- "rail-free hook insertion space"
- "cavity"
- "engagement tab"
- "outward lateral extent"
Interestingly, the court refused to construe the phrase "wherein said leading edge face is disposed on a face of said support element which faces away from the window" because the "phrase is unsupported by the specification and has no apparent plain meaning. Robert Bosch, LLC v. Pylon Manufacturing Corp., C.A. No. 08-542-SLR, Memo. Order, at 3 (D. Del. Mar. 30, 2010).
In Leader Technologies, Inc. v. Facebook, Inc., C.A. No. 08-862-JJF (D. Del. Mar. 9, 2010), Judge Farnan recently construed claim terms related to a patent involving “the ‘management and storage of electronic information,’ and specifically relat[ing] to ‘new structures and methods for creating relationships between users, applications, files and folders.’”
Plaintiff asked Judge Farnan to construe five claim terms, whereas defendant put forth three claim terms (down from its initial 31 claim terms, narrowed after the Markman hearing).
The construction of the eight disputed terms are as follows:
Context
“environment”
Judge Farnan found that this construction, proposed by plaintiff, was supported by the specification, and rejected defendants claim differentiation argument stating that “the specification should prevail over claim differentiation principles.” Id. at 10.
Component
“a computer-related entity, either hardware, a combination of hardware and software, software, or software in execution.”
Judge Farnan rejected defendant’s argument that means-plus-function treatment was appropriate thereby construing the term as expressly defined in the specification. Id. at 14.
Ordering
“organizing”
Judge Farnan rejected defendant’s proposed construction because it read in a limitation not supported by the claim or the specification. Id. at 15.
Traversing
“navigation according to a specific path or route”
Many-to-many Functionality
“two or more users able to access two or more data files”
Judge Farnan rejected defendant’s argument that the claim term was indefinite. Id. at 22-24.
Dynamically
“automatically and in response to the preceding event”
Judge Farnan rejected plaintiff’s argument that the claim term required no construction because it is commonly used in the field, “and one of ordinary skill in the art understands its meaning.” Id. at 24.
Metadata
Term given its plain and ordinary meaning
Judge Farnan determined that defendant’s proposed construction “import[ed] unnecessary and unwarranted limitations” into the claim term. Id. at 27. Furthermore, the proposed construction was not supported by the prosecution history. Id. at 28.
Accesses [the data]
Term given its plain and ordinary meaning
In Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., C.A. No. 08-290-SLR (D. Del. Feb. 24, 2010), Judge Robinson recently construed the following claim language of plaintiff's patent:
"truncated Factor VIII Protein which is an active procoagulant"
A Factor VIII protein that promotes blood coagulation and lacks a portion of the amino acid sequence of the human Factor VIII protein.
"having a peptide sequence of human factor VIII:C but lacking a peptide region selected from the group consisting of"
Having the amino acid sequence of the human Factor VIII protein lacking only the particular segment of the human Factor VIII protein in one of the specified alternatives (a), (b) or (c).
Here, plaintiff had argued for a broad interpretation of the claim (i.e., "lacking a peptide region of at least the regions identified in (a), (b) or (c)."). Id. at 3. Plaintiff argued, among other things, that the PTO's granting of a term extension for its patent based on its construction of the relevant claim be given great deference. Id. However, Judge Robinson noted that "[c]laim construction is a matter of law and, therefore, does not fall within the PTO's technical expertise (assuming that the PTO went through the claim construction exercise in the first instance)." Id. at 4.
In Grape Technology Group, Inc., et al. v. Jingle Networks, Inc., C.A. No. 08-408-GMS (D. Del. Jan. 25, 2010), Chief Judge Sleet recently construed the following terms of the patents at issue:
“affiliated with a customer command … issued from a customer telephonic device”
related to a customer command transmitted from a telephone
“generating a data field”
construed to have its plain and ordinary meaning
“the enhanced directory service sought by the customer”
service supplemental to standard telephone number directory assistance to be provided to the calling party
“ordered as a function of”
construed to have its plain and ordinary meaning
“establishing a communication”
enabling the exchange of signals
“event record”
one or more data fields used to memorialize an aspect of an information assistance call for purposes of billing
“during the communication” and “during the communications connection”
while the signals are enabled to be exchanged
“interface to receive signals to establish a communication”
hardware, software, or a combination thereof that accepts incoming information assistance requests
“subscriber”
any individual or business entity whose information is stored for retrieval by the communication assistance system
“information corresponding to a plurality of subscribers” and “information corresponding to subscribers” and “information corresponding to each of said subscribers”
data associated with subscribers
“a subscriber information other than the subscriber information requested by said requester”
construed to have its plain and ordinary meaning
“telephone switch”
construed to have its plain and ordinary meaning
“a first database”
construed to have its plain and ordinary meaning
“closing prompt message”
a message provided to a calling party upon completion of the information assistance call but prior to connecting the subscriber
“select(ing) a closing prompt code from a plurality of available closing prompt codes” and “selects said closing prompt code from any one of said available closing prompt codes” and “selection of said closing prompt code by said closing prompt module is from any one of said available closing prompt codes . . . relating to a subscriber information other than the subscriber information requested by said requester”
construed to have its plain and ordinary meaning
“available closing prompt codes”
construed to have its plain and ordinary meaning
“desired closing prompt message”
a closing prompt message identified by a specific closing prompt code
“available closing prompt messages”
construed to have its plain and ordinary meaning
In Boston Scientific Corp., et al. v. Johnson & Johnson, Inc., et al., C.A. No. 07-333-SLR (D. Del. Jan. 20, 2010), Judge Robinson construed the following terms as follows:
1. Stent
A device for providing support for a lumen in the body.
2. Biocompatible
Able to perform its function in the body with an acceptable biological response.
3. Therapeutic agent
A substance administered to treat or prevent a disease or condition.
4. Drug
A substance administered to treat or prevent a disease or condition.
5. Polymer
A material formed by polymerization and comprising repeating units of the same (homopolymer) or different (copolymer) types of monomers.
6. Copolymer
A polymer having two or more different types of monomers.
7. Polymeric carrier
A material comprised of at least one polymer that is formulated with the therapeutic agent.
8. Polymeric coating; coating
Covering layer(s) comprising a mixture of both a polymer and the therapeutic agent or drug.
9. Acrylate-based polymer or copolymer
A polymer in which at least one of the types of monomers is based on the structure of a salt or ester of acrylic acid.
10. Fluorinated polymer
A polymer containing one or more fluorine atoms.
11. Poly(ether-ester) copolymer
A polymer containing one monomer that includes an ether and another monomer that includes an ester.
12. Rapamycin or a macrocyclic lactone analog thereof
Sirolimus or a macrocyclic lactone molecule with a striction similar to sirolimus.
13. Rapamycin
Sirolimus and all analogs, derivatives and congeners that bind FKBP12 and possess the same pharmacologic properties as sirolimus.
14. Macrocyclic triene analog
A macrocyclic triene molecule with a structure similar to rapamycin and that binds FKB12.
15. An amount effective to inhibit neointimal proliferation
An amount sufficient to diminish neointimal proliferation.
16. Provides a controlled release of said therapeutic agent over a period of several weeks
Therapeutic agent is discharged gradually over the course of several weeks.
17. Releases
Discharges
18. Mixture; mixture thereof; blend thereof; incorporated into
Combination of two or more substances, or the act of combining said materials.
19. Applied; applied thereto; onto the stent; affixed to the intraluminal stent
Attached to the stent.
20. In-stent late loss
The minimal lumen diameter within the stent immediately following implantation minus minimal lumen diameter within the stent at a specified time following implantation.
For those with clients in the entertainment industry, district judge Joseph J. Farnan Jr. recently issued a notable decision construing claims related to paperless event ticketing. In particular, the Court construed the following claims:
"Personalized Physical Material"
"Paperless Ticket"
"Authentication Data"
"Exchanging"
"Data Center"
"Asks"
"Bid"
"Ask Quantity," "Ask Price," "Bid Quantity," and "Bid Price"
"Comparing the Bid to the Asks"
"Completing a Transfer of the Paperless Tickets When the Bid Price Equals the Ask Price and the Ask Quantity is Equal to or Greater than the Bid Quantity"
"The System"
"Access to the Venue Upon Presentation of the Buyer Authentication Data to an Access Device"
The Court also construed seven means-plus-function terms:
"Means for Associating the Paperless Tickets with Authentication Data of the Ticket Seller"
"Means for Reassociating the Paperless Tickets with Authentication Data of the Ticket Buyer"
"Means for Receiving from Ticket Sellers Electronic Asks"
"Means for Receiving from a Ticket Buyer an Electronic Bid"
"Means for Granting Access to the Event Upon Presentation of the Buyer Authentication Data of the Paperless Ticket"
"Means for Comparing the Bid to the Asks"
"Means for Completing a Transfer of the Paperless Tickets When the Bid Price Equals the Ask Price and the Ask Quantity is Equal to or Greater Than the Bid Quantity"
Magistrate Judge Mary Pat Thynge issued a claim construction order in the Innovative Patents, L.L.C. v. Brain-Pad, Inc. matter which involves a patent for an apparatus that enhances absorption and dissipation of impact forces for sweatbands (U.S. Patent No. 7,234,174). C.A. No. 07-680-MPT, Memorandum Order (D. Del. Jan. 13, 2010). The following claims were construed consistent with Phillips v. AWH Corp.:
In Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., et al., C.A. No. 08-309-JJF-LPS (D. Del. Dec. 18, 2009), Judge Stark recently construed the following claim terms.
“multi-sampling . . . during an off-time of said switching signal”sampling two or more times during one off-time of the switching signal
“a controller to generate the switching signal and to control the switching signal in response to a first feedback signal associated with a voltage control loop and a second feedback signal associated with a current control loop”a controller to generate the switching signal and to control the switching signal in response to a first feedback signal associated with a voltage control loop and a second feedback signal, distinct from the first feedback signal, associated with a current control loop
“controlling a switching signal to regulate the connection of the electrical power to output terminals in response to a first feedback signal associated with a voltage control loop and a second feedback signal associated with a current control loop”controlling a switching signal to regulate the connection of the electrical power to output terminals in response to a first feedback signal associated with a voltage control loop and a second feedback signal, distinct from the first feedback signal, associated with a current control loop
“sampling a voltage . . . and a discharge time”sampling a voltage from the auxiliary winding of the transformer when the transformer is discharging
“frequency variation signal”an internal signal that cyclically varies in magnitude during a fixed period of time and is used to modulate the frequency of the oscillation signal within a predetermined frequency range
“frequency jittering”varying the switching frequency of a switch mode power supply about a target frequency in order to reduce electromagnetic interference
“means coupled to the control input for varying the switching frequency, including: one or more current sources . . . and a counter”Means-plus function term, with a function of “varying the switching frequency of the oscillator,” and a structure of a digital-to-analog converter and a counter having at least four bits
In Aventis Pharma S.A. v. Hospira, Inc., Judge Sleet construed several terms related to three patents on technology involving taxane (an anti-cancer drug) derivatives. C.A. Nos. 07-721-GMS, 08-496-GMS, Amended Order (D. Del. Oct. 5, 2009).
- "stock solution": The Court construed this term consistent with its plain meaning to mean "a concentrated solution."
- "essentially free or free of ethanol": The Court construed this term to mean "no more than 5% ethanol by volume" for a stock solution" and "the same amount of ethanol as a stock solution with no more than 5% ethanol by volume" for a perfusion.
-"dissolved": The Court gave this term its plain and ordinary meaning.
-"consisting essentially of": The Court construed this common claim term to mean "composed of the listed ingredients and may include other ingredients that do not affect the basic and novel properties of the invention."
-"which contains": The Court foundt his term to be an open ended term which does not exclude additiona ingredients and therefore construed the term mean "comprising."
-"Taxotere": The Court construed this term to mean the chemical compound "docetaxel."
-"capable of being injected without anaphylactic or alcohol intoxication manifestation": The Court construed this term to mean "having reasonable expectation of being injected without causing anaphylactic or alcohol intoxication manifestation."
The parties submitted additional briefing and the Court has construed the term to mean the following:
- "homogeneously branched linear ethylene/ά-olefin interpolymers": "ethylene ά-olefin interpolymer in which the comonomer is randomly distributed within a given interpolymer molecule and wherein substantially all of the interpolymer molecules have the same ethylene/comonomer ratio within that interpolymer. Such interpolymer has no long chain branching."
Magistrate Stark recently issued a Report and Recommendation Regarding Claim Construction in Fujinon Corp. v. Motorola, Inc., C.A. No. 07-533-GMS-LPS (D. Del. Sept. 11, 2009). The disputed terms construed by Magistrate Judge Stark and his recommendations are as follows:
“A stop”Although Judge Stark noted that Plaintiff’s process to reach their proposed construction was flawed, he adopted their construction thereby recommending “‘an element with a hole or opening that blocks or limits light.” Id. at 8. Judge Stark rejected Defendant’s limited construction of “an aperture stop” because to limit the claim would be contrary to the Federal Circuit’s warning against limiting claims to specific embodiments in the specification. Id. at 10.
“Near the optical axis”Construed as “‘a central region that surrounds the optical axis but excludes a substantial peripheral region surrounding the central region.’” Id. at 16-17.
“Within an effective aperture range of the single focus lens”Although Judge Stark was “concerned” with Plaintiff’s construction, Defendant offered no alternative, therefore Judge Stark recommended a construction of “‘within an effective aperture range of the single focus lens.” Id. at 17-18.
“Center”Construed as “‘the center region, including the geometric center.” Id. at 18.
“Peripheral region”Judge Stark agreed with Defendant that the term was ambiguous, over Plaintiff’s objection that the term need not be construed. Id. at 18. Judge Stark, adopting part of Defendant’s proposed construction modified to be consistent with the specification, recommended the Court construe the term as “‘any portion of the region that begins outside 70% of the radius of the third lens.’”
Judge Robinson recently construed the parties' disputed claim terms set forth in a patent related to a "method and system for providing a preview thumbnail image of a web page" in Girafa.com, Inc. v. IAC Search & Media, Inc., C.A. No. 07-787-SLR, Memo. Order (D. Del. Sept. 15, 2009).
The following terms were construed:
- "image server"
- "A web server separated from said image server"
- "Visualization functionality"
- "At least partially concurrently"
- "Operative"
- "Hyperlink"
- "Annotated web page"
- "Thumbnail visual image"
- "Trimming a path component based on the consideration of finding the most representative image of a given web page"
- "Home page or homepage"
- "Thumbnail visual image of another web page of at least one web site which is represented by said at least one hyperlink"
- "Multiplicity"
- "Downloader"
- "Providing."
Chief Judge Sleet recently construed the terms of a pharmaceutical patent related to treatment of dysuria. In re: Alfuzosin Hydrochloride Patent Litigation, MDL Docket No. 08-md-1941-GMS, Order (D. Del. May 20, 2009). The following claim terms were construed:
- "dysuria"
- "effective dysuria controlling non-toxic amount of alfuzosine"
- "bladder neck disease"
- "neurological disorder"
- "benign hypertrophy of the prostate of alpha-adrenergic origin"
Specifically, the Court rejected certain proposed constructions where the party asked the Court to "import examples from the specification into the claims" as "contrary to Federal Circuit precedent." Id.
Last week, district judge Joseph J. Farnan Jr. issued a Markman decision addressing the claims of a skin-care-product patent. Notable among the Court’s analysis is its discussion of the term “comprising” in the context of the specification. The Court considered, and rejected, defendants’ argument that, because the specification details that the invention comprises an “absorption enhancing material,” the claim at issue must also be defined to include an “absorption enhancer”:
“The Court is aware of no cases, and Defendants do not cite any, standing for the proposition that the term ‘comprising,’ when used in the specification, means ‘the listed ingredients are required.’”
According to the Court, the specification describes a number of components that no party contends are properly part of the claim’s scope. As a result, “the specification – including its passages that use the word ‘comprise’ – simply does not provide a clear and consistent basis upon which to limit the claims.”
In Internet Media Corp. v. Dell, Inc., Judge Robinson construed the following terms used in a patent for technology related to providing access to the World Wide Web:
(1) "a published compilation of preselected Internet locations";
(2) "a predetermined published Internet location";
(3) "a unique predetermined mult-digit jump code."
Judge Farnan recently construed six terms used in patents related to the well-known asthma drug—albuterol. Sepracor, Inc. v. Dey, L.P., C.A. No. 06-113-JJF (Consol.), Memo. Op. (D. Del. Dec. 18, 2008).
The first disputed term, “side effects” was construed to mean “effects other than the desired therapeutic effect associated with the administration of racemic albuterol.” Id. at 13-14. The Defendants argued that by not limiting the term to those side effects set forth in the specification, the claims would cover side effects that were not known at the time the patent was filed and therefore the scope of the claims would be improperly expanded. Id. at 8-9. Judge Farnan found that the patentee did not expressly limit its claim scope to those side effects listed in the specification and, in fact, used language suggesting that the listed effects were only meant to be exemplary. Id. at 12-13. Also, the term “side effects” is a general, not technical, term and therefore can be construed according to its plain meaning. Id. at 13. Thus, the Court did not limit the claim term “side effects” to those set forth in the specification.
As typically arises in a situation where the patentee is awarded such a broad claim construction, the Defendants argued that such a construction would render the claims invalid on the grounds of indefiniteness and written description. Judge Farnan, in a footnote, acknowledged that such a construction may have that effect, however, these invalidity arguments are “best dealt with in a context other than the Court’s initial consideration of claim construction.” Id. at 15 n.2.
The second set of terms, “chronic administration” and “chronically administering to the individual,” was construed to mean “prophylactic or periodic administration.” Id. at 17. Because both parties relied on a declaration in construing this term and the PTO allowed the claims on the basis of this declaration, the Court used this extrinsic evidence in adopting its construction of “chronic administration.” Id. at 16.
The next term, “acute administration,” was construed to mean “treatment after onset of an asthma attack.” Id. at 18. The dispute related to this term was whether the treatment needed to be after the asthma attack began or at some other time. The specification and declaration mentioned above both supported the Court’s definition and because the Plaintiff offered no evidence otherwise, the Court adopted the construction above. Id. at 18.
The parties’ next dispute surrounded the terms “inducing bronchodilation or providing relief of bronchospasm.” Id. at 19. Specifically, the Defendants argued that the term should be limited to the treatment of asthma. Id. The Court found that there was not a “manifest exclusion or restriction” of the claim scope in the specification or prosecution history and because there was no particular definition of the terms in the patent history it looked to the dictionary definitions of “bronchospasm” and “bronchodilation” to define these terms. Id. at 22-23. The Court defined the claim terms to mean “inducing relaxation of smooth muscle in the walls of the bronchi and bronchioles or providing relief from contraction of smooth muscle in the walls of the bronchi and bronchioles.” Id.
The remaining terms were defined as follows:
- “treating bronchospasm in a patient with reversible obstructive airway disease”: “treating bronchospasm in a patient with a respiratory disorder such as asthmas, chronic bronchitis, or emphysema” Id. at 27.
- “preventing bronchospasm in a patient with reversible obstructive airway disease”: “preventing bronchospasm in a patient with a respiratory disorder such as asthma, chronic bronchitis, or emphysema” Id. at 29.
District Judge Joseph J. Farnan Jr. recently issued a claim construction decision notable for its refusal to construe several claim terms. In the underlying dispute over a liquid-crystal display patent, the parties requested construction of the terms "display apparatus" and, in relevant part, "providing a predetermined variation with viewing angle of light transmission." Citing a variety of infirmities, the Court declined to construe the terms.
According to the Court, the "display apparatus" term appears only in the preamble, and thus cannot constitute a limitation:
"[T]he terse preamble simply refers to a 'display apparatus,' which, in the Court's view, is nothing more than a statement of the general field of the claim. Indeed, the word 'display' is not relied upon later in the claim to describe the details of the invention, which, in and of itself, provides further corroboration for the Court's conclusion that the preamble is not a limitation."
The "predetermined variation" phrase suffered a similar fate, but for opposite reasons: rather than lacking sufficient explanation in the specification, as above, the phrase instead had sufficient explanatory support to refute defendants' proposed construction:
"Pairing a description of a specific, concrete use of the invention with a generalized description of the invention, the specification thus uses an example in the usual way to clarify the broader concept. . . . [T]his language, rather than being dispensable boilerplate, represents the standard mode of using an example to convey an idea. The Court will not punish the patentees for attempting to make their specification more accessible in this manner."
Because plaintiff's proposed construction altered the claim language "only slightly," the Court declined to construe the claim phrase.
Magistrate Judge Mary Pat Thynge recently issued a Markman opinion in the matter Cordance Corp. v. Amazon.com, Inc., C.A. No. 06-491-MPT, Memo. Order (D. Del. Dec. 5, 2008). The construed claims include:
(1) "metadata"
(2) "providing customer data storing information for a customer;" "providing information provider data storing information for an information provider"
(3) "metadata associating said customer data with said transaction"; "metadata associating said information with said transaction"
(4) "processing said metadata associating said customer data so as to complete the purchase transaction"
(5) "information provider"
(6) "information consumer"
(7) "control structure"
(8) "processing of said control structure"
(9) "feedback information"
(10) "processing said metadata to execute instructions external to said control structure"
(11) "storage menas for storing"
(12) "association means for creating metadata associating portions of said information and defining a control structure for processing at least at said consumer memory to associate with said metadata processes for controlling the communication of said information, said metadata including data exchange metadata associating a process for controlling the transfer of feedback information, said feedback information including at least a portion of said consumer information, to said provider"
(13) "transfer means for transferring said information, including said metadata defining said control structure from said provider memory to said consumer memory"
(14) "feedback transfer means for transferring said feedback information from said consumer memory to said provider memory"
(15) "processing means for executing instructions external to said control structure to perform said processes to control communication of said information"
(16) "directly modify the user's own respective personal data record within the database"
(17) "virtual personal address book"
(18) "directly view the data records."
Judge Farnan recently construed the terms below for claims related to technology used to "optimize the rate at which data can be transmitted across communication channels." CIF Licensing, LLC v. Agere Systems, Inc., C.A. No. 07-170-JJF, Memo. Op. (D. Del. July 10, 2008):
-"receiver"
-"line probing processor"
-"selector"
-"for selecting one of the plurality of frequency bands"
-"for selecting one of the plurality of bit rates"
-"constellation"
-"constellation switching"
-"can be"
-"frame selector"
-"zero insertion unit"
-"signal constellation selector/mapper"
-"operably coupled"
Judge Farnan further found that the preambles of certain claims were limiting under the recent Federal Circuit decision Symantec Corp. v. Computer Assocs. Int'l Inc., 522 F.3d 1279 (Fed. Cir. 2008).
Judge Robinson recently construed the following claim terms in Callaway Golf Company v. Acushnet Co, C.A. No. 06-091-SLR, Memo. Order (D. Del. Nov. 20, 2007):
- "Cover layer having a Shore D hardness"
- "Core"
Is there a limit to the number of claims a district court will construe? Yesterday, a Delaware District Judge issued a claim construction opinion addressing that question. The Court, faced with the prospect of interpreting ninety-nine claim terms, sua sponte limited the scope of its opinion:
While a general interest in the terms of the patent is understandable, I cannot, consistent with my judicial responsibilities, answer questions that may be of no more than academic interest. Therefore, I have endeavored to construe only those terms that, based on the papers submitted, appear to be dispositive of issues brought to my attention. Ampex Corp. v. Eastman Kodak Co., C.A. No. 04-1373-KAJ, Memo. Op. at 1, n.1 (D. Del. Oct. 26, 2006). Given the increased awareness of Federal Circuit reversal rates of multi-claim decisions, perhaps the Court's action is a signal to the bar - the less claims, the better.
In Pharmacia & Upjohn Co. v. Sicor Inc. & Sicor Pharms., Inc, C.A. No. 04-833 (D. Del. Aug. 17, 2006) (Jordan, J.), the District Court construed the following terms in the context of a pharmaceutical patent for a ready to use form of anthracycline glycoside: "physiologically acceptable," "anthracycline glycolside," "sealed container," and "storage stability." Judge Jordan denied defendant's motions for summary judgment on issues of non-infringement, invalidity for lack of a written description and on anticipation. Plaintiff's motion for summary judgment on anticipation was granted.
